Online piracy is an increasingly important issue facing U.S. policy makers.[1] But it is especially daunting for U.S. copyright and trademark holders, the attorneys who represent them in combating piracy, and the forensic experts who provide support. This article offers a brief overview of some of the techniques we have successfully used to lay the necessary evidentiary foundation to support misappropriation and infringement claims. Forensic experts face a number of challenging requirements: they must collect and preserve allegedly infringing materials, identify the owners and operators of the websites distributing infringing materials, and evaluate the extent of infringement, so that the amount of damages can be determined. Fortunately, a variety of tools, reference sources, and techniques exist that facilitate tracking down and prosecuting those individuals or organizations engaged in online copyright or trademark piracy.

While much has been written about TV and film piracy on illegal file-sharing sites, this article focuses on the more mundane theft of trademarks and other online content. The following hypothetical scenario illustrates an increasingly common example of online piracy. We will use it in the balance of this article to describe the steps skilled forensic examiners take to collect and preserve evidence.

Hypothetical Piracy Scenario

Your client sells educational course material on its website under the trademark “AlwaysGetAnA.” The courses have been developed over a period of a dozen years and contain thousands of pages of original content. Defendant registers for your client’s courses, pays the tuition, and downloads course materials. However, instead of taking the courses, defendant takes the materials, translates them into several foreign languages, sets up dozens of websites around the world, and offers the translated materials for sale under the trademark “NothingButA.” Your client has identified some of these websites and wants to put a stop to this illegal behavior. Further, your client wants to sue for damages. Your challenge is to gather the evidence needed to obtain an injunction and to quantify the extent of harm to your client.

Some of the forensic methods we use to support injunction efforts, and to quantify the harm to the client, are set forth in Figure 1, below. Our work is typically delivered in the form of a declaration for use by counsel in support of an injunction motion.

A. Identify initial population of websites to investigate.

Before an online piracy investigation can proceed, the plaintiff should provide the forensic expert with an initial population of websites to “seed” the investigation. This initial population can be derived through basic online research methods such as conducting Google searches on variations of the plaintiff’s trademark. Frequently, the trademark will appear directly in a website’s URL. For example, under the hypothetical scenario discussed above, websites with URLs such as www.nothingbuta.com, www.nothingbuta.net, and www.nothing-but-a.com are likely candidates for trademark infringement. As discussed further below, the expert should be aware that this initial website population may expand as the investigation proceeds.

[1] The Commission on the Theft of American Intellectual Property, The IP Commission Report, at 4 (2013) (finding that the U.S. loses more than $300 billion a year in revenue due to IP theft, millions of jobs are lost, innovation is stifled, and GDP is lessened); Id. at 24 (noting that the shadow market for software alone increased by 9.2% between 2010 and 2011, with China’s piracy rate an astonishing 77% and its software investment a mere 7%).

About the AuthorsJeff Parmet is a widely respected consulting and testifying expert and the founder and managing partner of DisputeSoft. As an expert, Mr. Parmet has been involved in over 250 software disputes. He is also a member of the State Bar of California. jparmet@disputesoft.com

Tom Ashley is an intellectual property software expert at DisputeSoft. He holds a Certified Associate in Project Management and received his J.D. from American University Washington College of Law. Mr. Ashley works on a wide range of software-related matters. tashley@disputesoft.com.

Nick Ferrara has been a software expert at DisputeSoft for six years. During this time, Mr. Ferrara has worked on numerous online piracy and other IP software matters. He holds a Bachelor of Arts degree in Computer Science and Politics with Honors from Oberlin College. nferrara@disputesoft.com.